Elaboration reviewing and updating

Judge O'Malley explained that typically there is a very good reason why a patentee has specified numerical limitations - to avoid prior art.She suspected that this is why she does not see many Do E cases involving numerical limitations, but there are exceptions, and the Do E could extend a claim slightly beyond numerical limits, provided there is no prior art issue.If you accept the limitation, you have to live with that limitation.The Actavis case would have been pretty clear in the US - the argument on equivalents would not have survived the prosecution file history estoppel. Judge Kalden said that we do not have the UPC at the present time, but harmonistaion has been achieved to a great extent.

Different decisions from different Courts often turn on the evidence, sometimes on the procedural rules (which may not be desirable, but is nevertheless what happens), and also on an appreciation of the facts in the case.From a German perspective, Judge Meier-Beck recognised that the Do E has a very narrow role in claims with numerical ranges, but it is not excluded.What role should the file history have in the Do E, and should examination of the file history be confined to the patent office of the jurisdiction in question?The size specified in the claims was said to be an 'average' size, and some particles in the infringing product were outside that range - the Dutch Court found infringement on the basis of the Do E.As a general rule, it is difficult to sustain arguments about the Do E on numerical limitations, but there are exceptions.